We use cookies to customise content for your subscription and for analytics.If you continue to browse Lexology, we will assume that you are happy to receive all our cookies. For further information please read our Cookie Policy.

Examining the credibility of an invention

At present, most patent applications are examined based on their specification, without asserting the limitations of the claims. This raises issues for the credibility of the applicant's rights. In general, an invention is patentable based on three requirements:

novelty;

inventive step; and

industrial application.

Thus, the question that arises is whether these requirements refer to the specification, the claims or both. In general, the Indian Patent Office requires claims to conform with the invention described in the specification and the meaning of the terms and phrases used in the claims to be clear by reference to the overall description.

A patent examiner should carry out the novelty and obviousness analysis using the broadest reasonable standard of interpretation. In this scenario, what standpoint should a patent examiner take when dealing with a patent application? And what does "the broadest reasonable standard of interpretation" mean – should the meaning of the scope of the invention be interpreted from the claims themselves, or should the specification be searched for the meaning?

Are claims the name of the game? The current trend says no. Based on the logic applied to claim construction, the meaning of the scope of the invention is based on the claims, which are derived from the specification. The derivation of claims should be obtained from the exact part of the specification relevant to the respective claims. Therefore, it is crucial for examiners to anticipate the basis of the claims from the appropriate part of the specification. Using the incorrect part of the specification may lead to the erroneous interpretation of the claims and may drive the examiner to misunderstand the credibility of the invention, dismissing the grant of the application.

The trend in the examination of Indian patents also shows that in the majority of cases, the limitations are being imposed on claims made in the specification. Limitations should not be incorporated from the specification into the claims; to ensure the better examination of patent applications, this may happen the other way round (Arlington Indus, Inc v Bridgeport Fittings, Inc, 345 F 3d 1318, 1327 (Fed Cir 2003); Gart v Logitech, Inc, 254 F 3d 1334, 1343 (Fed Cir 2001)). The specification should be used for any clarification needed to interpret the claim language. Therefore, claims "must be read in view of the specification, of which they are a part” (Markman v Westview Instruments, Inc, 52 F 3d 967, 979 (Fed Cir 1995), aff'd, 517 US 370, 116 S Ct 1384, 134 L Ed.2d 577 (1996)). However, it is unreasonable to impose a limitation from the specification into the claims.

For example, suppose that the claims included at the time of filing recited a “method of determining a biological state of a subject”, which included the step of “treating an affected stage of a subject” where such step falls under Section 3(i) of the Patent Act 1970. Then suppose that the applicant amended the claims at a later stage, such that the amended claims did not fall under the method of treatment claims. Could this application be rejected for not being patentable (a method of treatment claim cannot be patented)? According to a review of the rejection criteria for Indian applications, the subject matter of the specification (comprising the embodiment falling under Section 3(i)) and the claims are considered during examination. Thus, the application would be rejected based on the fact that “subject matter of complete specification and claims [fall] under section 3(i)”. Again, in such case the importance of claims should be considered in regard to the specification during the examination of the application. According to the basic rules of drafting applications and claiming inventions, the specification would support the subject matter of claims both before and after amendment. In general, the specification comprises the broadest possible explanation of the complete invention. Therefore, in such a scenario, respective embodiments referring to the claims as recited should be considered for interpretation, which will enable the examiner to better judge the claims. Persons of ordinary skill in the art would rarely rule out the definition of terms as recited in the claims to the representations depicted in the whole specification.

Similarly, imagine that the claims included at the time of filing recited the broadest possible scope of the invention, but subsequently, at examination stage, the applicant incorporated some limitations in the claims and excluded some embodiments from the claims subject to the non-patentability criteria. Could such an application be rejected based on the excluded embodiments? The answer to this question is clear: the excluded embodiments should not be considered during the examination procedure, and the entire specification cannot be used to interpret the claim.

Therefore, claims should be analysed and examined solely based on their scope, as interpreted from the specific embodiments of the specification, without referring to the entire specification.

This article first appeared in IAM. For further information please visit www.iam-media.com.

Related topic hubs

Compare jurisdictions: Patents

“Lexology/Newsstand articles are very good quality. I like the short summary style and how it is broken down by practice area. Lexology/Newsstand is a good indicator of whether a law firm has an attorney who is knowledgeable about a subject area.”